INTELECTUAL PROPERTY DEFINED

Intangible assets resulting from the creative work of an
individual or organization.

Creations of the mind, such as:
o Inventions
o Literary and artistic works;
o Symbols, names, images and designs used in commerce.


If any person possessing ordinary skill in the art was able to
draw the inferences and he constructs that the supposed
inventor drew from prior art, then the latter did not really
invent it

Person skilled in the art-Ordinary practitioner (fictional
person)
a. Has access and understanding of all the prior art
The legal rights which result from intellectual activities in
the industrial, scientific, literary and artistic fields.
PATENTS
b.
Aware of common general knowledge in the specific
art
c.
Observes developments in the related technical field
-
Could be a team; need not have inventive ability
CONSTITUTIONAL BASIS
“The state shall protect and secure the exclusive rights of
scientists, inventors, artists, and other gifted citizens to their
intellectual property and creations, particularly when beneficial
to the people, for such period as may be provided by law.”
BASIC PATENT PRINCIPLES
1. TERRITORIALITY – Patents are only valid in the
country or region in which they have been granted
2.
FIRST-TO-FILE – applicant who files first will get the
patent
3.
DISCLOSURE – applicant shall disclose the invention in a
manner sufficiently clear and complete
Quid pro quo Principle – protection in exchange for
disclosure
CONDITIONAL – patents are granted only upon
compliance with the criteria of patentability
DOCTRINE OF EXHAUSTION

Also known as the, DOCTRINE OF FIRST SALE

It provides that the patent holder has control of the first sale
of his invention

He has the opportunity to receive the full consideration for
his invention from his sale. Hence, he exhausts his rights in
the future control of his invention.
A patent may be INFRINGED either:
1.
Literally, or
2.
By equivalents
4.
5.
LITERAL INFRINGEMENT

Literal infringement exists if an accused device falls
directly within the scope of properly interpreted claims.
LIMITED RIGHTS
DOCTRINE OF EQUIVALENTS
How much from a prior art is SUFFICIENT?

An infringement also occurs when a device appropriates a
prior invention by incorporating its innovative concept and
despite some modification and change, performs
substantially the same function in substantially the same
way to achieve substantially the same result.

Function → means → and → result test
“The defense of lack of novelty (i.e. anticipation) can only
be established by a single prior art reference which
discloses each and every element of the claimed invention.
RULE: When a work has already been made available to the
public, it shall be on non-patentable for absence of novelty.
XPN:
DOCTRINE OF NON-PREJUDICIAL DISCLOSURE
 The disclosure of information contained in the application
during the 12-month period before the filing date or the
priority date of the application if such disclosure was made
by”
1.
The inventor
2.
A patent office and the information was contained
3.

a.
In another application filed by the inventor and should
have not have been disclosed by the office, or
b.
In an application filed without the knowledge or
consent of the inventor by a third party which
obtained the information directly or indirectly from
the inventor;
A third party who obtained the information directly or
indirectly from the inventor (IPC. Sec. 25)
TEST OF NON-OBVIOUSNESS
REMEDIES OF THE OWNERS
AGAINST INFRINGERS

OF
THE
PATENT
Civil action for infringement - The owner may bring a civil
action with the appropriate Regional Trial Court to recover
from infringer the damages sustained by the former, plus
attorney’s fees and other litigation expenses, and to secure
an injunction for the protection of his rights. If the damages
are inadequate or cannot be reasonably ascertained with
reasonable certainty, the court may award by way of
damages a sum equivalent to reasonable royalty.
No damages can be recovered for acts of infringement
committed more than four (4) years before the filing of
the action for infringement.

Criminal action for infringement – If the infringement is
repeated; The criminal action shall suffer imprisonment of
not less than six (6) months but not more than three (3)
years and/or a fine not less than P100,000.00 but not
more than P300,000.00
The criminal action prescribes in three (3) years from
the commission of the crime

Administrative remedy – Where the amount of damages
claimed is not less than ₱200,000.00.
The patentee may choose to file an administrative
action against the infringer with the Bureau of Legal Affairs
(BLA). Unlike regular courts, the BLA may not issue
search and seizure warrants or warrants of arrest.







Destruction of Infringing material – Upon court order

DEFENSES IN ACTION FOR INFRINGMENT
1.
2.
3.
Invalidity of the patent;
Any of the grounds for cancellation of patents;
a. That what is claimed as the invention is not new or
patentable
b. That the patent does not disclose the invention in a
manner sufficiently clear and complete for it to be
carried out by any person skilled in the art; or
c. The patent is contrary to public order and morality
Prescription
REQUIREMENT for a mark to be REGISTERED
 A visible sign, and
 Capable of distinguishing one’s goods and services from
another
Immoral, deceptive, or scandalous matters
Matter which may disparage or falsely suggest a
connection with persons, etc.
Contrary to public order or morality
Flags or Coat of Arms of nations
Names, portraits, or signature of living persons
 XPN: With consent
Names, portraits, or signature of a deceased President of
the Philippines.
 XPN: With written consent of his/her living widow
Identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date,
in respect of:
a. The same goods or services, or
b. Closely related goods or services, or
c. If it nearly resembles such a mark as to be likely to
deceive or cause confusion
DURATION OR
REGISTRATION
EFFECTIVITY
OF
TRADEMARK

10 YEARS, subject to indefinite renewals of 10 years
each.

The registrant is required to file a declaration of actual use
and evidence to that effect, or show valid reasons based on
the existence of obstacles to such use, within one (1) year
from the fifth (5th) anniversary of the date of the registration
of the mark. Otherwise, the mark shall be removed from the
Register by the IPO.
VISIBLE SIGN
 Words , Letters, Numerals , Figures/Pictures, Shapes,
Colors , Logos , Three-dimensional objects, Combinations
INFRINGEMENT OF TRADEMARK
Unauthorized use of a trademark.
Fraudulent intent is unnecessary
GR: Prior Registration of the trademark is a prerequisite to
the action.
NOT VISIBLE
 Scents
 Sounds
DISTINCTIVENESS OF A MARK
1.
FANCIFUL TRADEMARKS – made-up words which are
invented to be used as a trademark name.
2.
ARBITRARY TRADEMARKS – words that have a real,
common meaning but they are completely unrelated to the
product or service.
3.
SUGGESTIVE TRADEMARK –
characteristic of the product or service
4.
DESCRIPTIVE TRADEMARK – description of the
product or service
5.
GENERIC TRADEMARKS – cannot be protected as they
are simply a generic description of the product or service.
names
after
XPN: Well-known marks
COLORABLE IMITATION

Such a close or ingenious imitation as to be calculated to
deceive ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives
and to cause him to purchase the one supposing it to be the
other

Ex. Nike vs. Hike
a
LIKELIHOOD OF CONFUSION
TYPES of confusion:

Confusion of GOODS – as the goods themselves

Confusion of BUSINESS – as to the source or origin of
such goods
MARKS which may be REGISTERED
Any word, name, symbol, emblem, device, figure, sign,
phrase, or any combination thereof. Except those enumerated
under Section 123, IPC
TRADEMARK
Identifies or distinguishes
the goods or services
TRADE NAME
Identifies or distinguishes
the business or enterprise
Registration is required
Registration
required
is
not
-
TEST OF CONFUSION

NON- REGISTRABLE MARKS (Sec. 123.)
Wherein the goods of the parties are different but the
defendant’s product can reasonably be assumed to
originate from the plaintiff thereby deceiving the public
into believing that there is some connection between
the plaintiff and defendant, which in fact, does not
exist.
DOMINANCY TEST – focuses on the prevalent features
of the competing marks
Ex. PAPA KETSARAP vs. PAPA BOY Lechon Sauce

TOTALITY TEST – determined on the basis of visual,
aural, connotative comparisons and, overall impressions
endangered by the marks in controversy as they are
encountered in the marketplace.
Ex. Lee vs. Stylistic Mr. Lee
OTHER FACTORS
RIGHTS OF COPYRIGHTABLE OWNERS
PRESUMPTION OF AUTHORSHIP
The natural person whose name is indicated on a work in
the usual manner as the author shall, in the absence of proof to
the contrary, presumed to be the author of the work. This is
applicable even if the name is a pseudonym, where the
pseudonym leaves no doubt as to identity of the author
IDEM SONANS RULE
 Aural effects of the words and letters contained in the mark
are also considered in determining the issue of confusing
similarity
The person or body corporate, whose name appears on the
audio-visual work in the usual manner shall, in the absence of
proof to the contrary, be presumed to be the maker of said work

RIGHTS OF COPYRIGHT OWNERS

Two names are said to be "idem sonantes" if the attentive
ear finds difficulty in distinguishing them when
pronounced.
1.
Similarity of sound is sufficient to rule that the two marks
are confusingly similar when applied to merchandise of the
same descriptive properties.
Examples:
 “Pycogenol”
Horphag)
a.
b.
vs.
c.

“Dermaline” vs. “Dermalin” (Dermaline vs. Myra
Pharmaceuticals)
d.
e.
f.
g.

“Nanny” bs. “Nan” (Nestle vs. Dy Jr.)
vs.
“PCO-GENOL”
(Prosource

DOCTRINE OF SECONDARY MEANING

This doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an
article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and
so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article
was his product.
Ex. De la sale Montessori International of Malolos, Inc. vs.
De La Salle Brothers Inc.


2.
Administrative action - same as in patent infringement
cases. If the amount of damages claimed is not less than
P200,000.00, the registrant may choose to seek redress
against the infringer by filing an administrative action
against the infringer with the Bureau of Legal Affairs.
Civil Action - filed with the Regional Trial Courts. The
owner of the registered mark may ask the court to issue a
preliminary injunction to quickly prevent infringer from
causing damage to his business. Furthermore, the court will
require infringer to pay damages to the owner of the mark
provided defendant is shown to have had notice of the
registration of the mark (which is presumed if a letter R
within a circle is appended) and stop him permanently from
using the mark.
Criminal Action - the owner of the trademark may ask the
court to issue a search warrant and in appropriate cases,
remedies available shall also include the seizure, forfeiture
and destruction of the infringing goods and of any
materials and implements the predominant use of which has
been in the commission of the offense.
- 2 – 5 years imprisonment
- ₱50,000 – ₱200,000 in fine
Reproduction of the work or substantial portion thereof
Carry-out derivative work (dramatization, translation,
adaptation, abridgement, arrangement or other
transformation of the work)
First distribution of the original and each copy of the
work by sale or other forms of transfer of ownership
Rental right
Public display
Public performance
Other communications to the public.
DURATION of Economic Rights:
 G.N.: 50 YEARS
- Copyright protection – Lifetime of the artist + 50
years after death.
REMEDIES and JURISDICTION

ECONOMIC RIGHTS – The right to carry out, authorize,
or prevent the following acts:
3.
MORAL RIGHTS – For reasons of professionalism and
propriety, the author has the right:
a.
To require that the authorship of the works be
attributed to him (attribution right)
b.
To make any alterations of his work prior to, or to
withhold it from publication
c.
To preserve integrity of work, object to any distortion,
mutilation or other modification which would be
prejudicial to his honor or reputation; and
d.
To restrain the use of his name with respect to any
work not of his own creation or in a distorted version
of his work

DURATION of Moral Rights:
 “During the lifetime of the author and in
perpetuity after his death”
- Paternity Right/Right of Attribution
 Coterminous with Economic Rights –
- Alteration and Non-Publication Right;
- Right to Perseveration of Integrity, and
- Right against False Attribution
DROIT DE SUITE or “art proceeds right” - is the artist’s
resale right, which requires that a percentage of the resale
price of an artistic work is paid to the author. The right is
exercisable even after the author’s death, provided the work
is still in copyright
In every sale or lease of an original work of painting or
sculpture or of the original manuscript of a writer or
composer, subsequent to the first disposition thereof by the
author, the author or his heirs shall have an inalienable right
to participate in the gross proceeds of the sale or lease to the
extent of five percent (5%)
3.
4.
Destruction without any compensation all infringing copies
5.
Moral and Exemplary damages (IPC, Sec. 216.1); or
6.
Seizure and impounding of any article, which may serve as
evidence in the court proceedings
DIFFERENCES
BETWEEN
TRADEMARK, AND PATENTS
COPYRIGHT,
Literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the
moment of their creation.
Any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods
format of television game show is not
subject to a copyright.

generic terms for goods or services
characteristics of goods like quality or
quantity
customary sign in everyday language
color itself
method
idea
procedure
principle
operation
system
Registered intellectual
rights
The right granted to an inventor by a State, or by a regional
office acting for several States, which allows the inventor to
exclude anyone else from commercially exploiting his invention
for a limited period
Not required;
Optional: The
National
Library or IPO
Damages, including legal costs and other expenses, as he
may have incurred due to the infringement as well as the
profits the infringer may have made due to such
infringement
Impounding during the pendency of the action sales
invoices and other documents evidencing sales
COPYRIGHT
2.
10 years and a.
renewable
b.
upon
expiration
c.
d.
It depends on a.
the type of b.
work
c.
d.
e.
f.
Injunction
Bureau
of
Trademarks,
Intellectual
Property Office
1.
TRADEMARK
REMEDIES IN CASE OF COPYRIGHT INFRINGEMENT
Need not be registered
Note: The Intellectual Property Code does NOT expressly
provide protection against trademark dilution.
Plagiarism
The use of another’s information, language, or writing, when
done without proper acknowledgment of the original source
of
Trademark Dilution
It is the lessening of the capacity of a famous mark to
identify and distinguish goods or services, regardless of the
presence or absence of (1) competition between the owner of the
famous mark and other parties; or (2) likelihood of confusion,
mistake or deception. Subject to the principles of equity, the
owner of a famous mark is entitled to an injunction against
another person’s commercial use in commerce of a mark or
trade name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality of the mark
Term
protection
Copyright Infringement
It is the doing by any person, without the consent of the
owner of the copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright. The act of
lifting from another’s book substantial portions of discussions
and examples and the failure to acknowledge the same is an
infringement of copyright.
Office where
registered
c.
Directly commits an infringement;
Benefits from the infringing activity of another person who
commits an infringement if the person benefiting has been
given notice of the infringing activity and has the right and
ability to control the activities of the other person;
With knowledge of infringing activity, induces, causes or
materially contributes to the infringing conduct of another
BASIS
a.
b.
Definition
WHO ARE LIABLE FOR INFRINGEMENT?
Technical solution of a
problem in any field of
human activity which
is
new
(novel
invention)
and
industrially applicable.
Any
visible
sign
capable
of
distinguishing
the
goods (trademark) or
services (service mark)
Literary
and artistic
of an enterprise
must
works
be registered).
Transfers to public domain
Examples: Pride and Prejudice, The Lizzie Bennet Diaries
scientific theories
contrary to public order or morality
aesthetic creations
methods for treatment of human body
plant varieties

20 years from a.
filing date of b.
application
c.
d.
e.
EXPIRATION OF COPYRIGHT
Bureau
of
Patents,
Intellectual
Property Office
Rights which are not covered under a Droit de suite
a. Prints
b. Etchings
c. Engravings
d. Works of applied art
e. Similar works wherein the author primarily derives
gain from the proceeds of reproductions
PATENT
